PTAB

IPR2016-00266

McWane Inc v. Waugh Tom

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Centrifugally Cast Pole and Method
  • Brief Description: The ’329 reissue patent discloses a centrifugally cast, elongated, hollow utility pole with a tapered outer diameter. The pole includes features such as a substantially uniform wall thickness, a running ring at its larger end, and a plurality of asymmetric pimples on its outer surface.

3. Grounds for Unpatentability

Ground 1: Claims 10-13 are obvious over Waugh in view of Ludwig

  • Prior Art Relied Upon: Waugh (Patent 5,784,851) and Ludwig (Patent 2,577,423).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Waugh, by the same inventor, discloses the core limitations of claim 10: a hollow, tapered, centrifugally cast utility pole. While Waugh teaches a pole with a gradually increasing wall thickness, Ludwig teaches the centrifugal casting of hollow iron pipes with a substantially uniform wall thickness. Ludwig also discloses texturing the interior of a casting mold via peening to create a pimpled exterior surface on the cast pipe, which corresponds to the claimed "asymmetric pimples." Petitioner asserted that Waugh’s own disclosure of a flange (element 20) cast at the larger-diameter end of the pole meets the limitations of a "running ring" that creates a "wall thickness at the second end larger than the wall thickness between the first and second locations."
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Waugh and Ludwig because both relate to the centrifugal casting of elongated, hollow iron products (poles and pipes, respectively). A POSITA seeking to produce Waugh’s pole with a uniform wall thickness—a known design choice for structural support—would have looked to analogous art like Ludwig, which explicitly teaches how to achieve this result. Similarly, a POSITA would have understood that the "conventional" casting molds mentioned in Waugh would be peened as taught by Ludwig to prevent molten metal slippage, which would inherently create the claimed pimpled surface.
    • Expectation of Success: A POSITA would have had a high expectation of success, as combining the teachings involved applying a known process (uniform wall casting from Ludwig) to a similar product (Waugh's pole) and using a standard mold preparation technique (peening from Ludwig).

Ground 2: Claims 10-13 are obvious over Waugh and Ludwig in view of Clow

  • Prior Art Relied Upon: Waugh (Patent 5,784,851), Ludwig (Patent 2,577,423), and Clow ("Pipe Economy," Clow Corporation, 1971).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground reinforces the argument from Ground 1, with Clow added to further address the "running ring" and "larger wall thickness" limitations. Petitioner contended that if the Board found Waugh's flange insufficient, Clow provides an explicit disclosure. Clow, a technical catalog for cast iron pipes, illustrates centrifugally cast ductile iron pipes with various ring-shaped flanges (e.g., "mechanical joint" and "flanged joint"). These flanges are shown cast integrally with the pipe, extending outwardly from an end, and imparting a wall thickness at that end greater than the pipe's uniform wall thickness along its length.
    • Motivation to Combine: A POSITA would combine Clow with Waugh and Ludwig because all three references are in the same field of centrifugally cast, hollow, ductile iron products. If seeking to implement a more defined flange on Waugh's pole for mounting or other purposes, a POSITA would have been motivated to consult a standard industry reference like Clow, which shows well-known, commercially available flange designs for analogous products.
    • Expectation of Success: Incorporating a standard flange design from Clow onto the end of Waugh's centrifugally cast pole would have been a straightforward modification with a high expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) based on the further addition of Ladd (Patent 1,551,827) and Johnston (Patent 3,134,147). These references were introduced to show the well-known use of ring-shaped flanges as "running rings" to guide cylindrical objects like pipes along rails in foundry and furnace environments, directly teaching the intended function of the structure claimed in the ’329 reissue patent.

4. Key Claim Construction Positions

  • "formed by centrifugal casting": Petitioner argued this phrase renders claims 10-13 product-by-process claims. For patentability purposes, the process limitation ("centrifugal casting") should not limit the scope of the product claim. Thus, the pole's structure must be patentable over prior art poles, regardless of how those prior art poles were made.
  • "a plurality of asymmetric pimples": Based on the specification's silence and the prosecution history of the parent patent, Petitioner proposed this term be construed broadly as "two or more protuberances, which are not symmetrical in at least one aspect of shape, size, location, or orientation, extending away from the surface of the pole member."
  • "running ring" and "larger wall thickness": Petitioner asserted the "running ring that extends outward from the second end" should be construed as "a flange extending outwardly around the second end of the pole member." Further, Petitioner argued the limitation requiring "a wall thickness at the second end... larger than the wall thickness between the first and second locations" must be construed such that the running ring/flange itself can constitute the portion of the pole with the larger wall thickness.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and cancellation of claims 10-13 of the ’329 reissue patent as unpatentable under 35 U.S.C. §103.